Two companies, same product name, we hold TM, they just got $14mil in funding

[MinCA]

What is the name of your state? California

We are trying to start a successful company and have been working on it for a while now. I'll call us Blue Cat. We have one competitor that I know of who does something similar to what we do, but not exactly. The best analogy I can think of without giving away what we are doing would be something like a bond with the DMV versus insurance for your car. Both basically achieve the same purpose in the end, but through different methods.

Our competitor, who I will call Sprinting Fast and we are using the same name for one group of customers, and to be in this group is our product. We started using it before knowing they existed, and I assume they did the same thing, not knowing we existed.

Now that you have the background.

A couple months ago we got the trademark for this product. I'll call it Cat Food. The first word of the two-word trademark is the same word as the second of our company name. Sprinting Fast doesn't even sell "Cat Food." They sell "Cat Water." (Food and water both help achieve life, but are different, like the car analogy.) You pay for "Cat Food" with them, but get "Dog Food." They tell you when you sign up that you get "Dog Food" though, even if they call it "Cat Food." But someone else might not know that and be misled into thinking the person has bought "Cat Food" and it affects their actions.

Now that you are thoroughly confused!

Sprinting Fast got a little funding before we did and got their site up quicker and better. Ours wasn't far behind. Our product doesn't work as well yet as their product of the same name, even if it's not the same. But we have it up and ready for purchase anyway. We got the trademark for "Cat Food" literally the day before they started writing the TM after the name on their website. "Cat Food (TM)" Like that, with the parenthesis. But if you look it up, we have the trademark.

Only a couple weeks later they got $14 million in VC funding and are advertising as owning the trademark to "Cat Food," though the only trademark they've gotten so far is for their logo, which is just a strange way or writing Sprinting Fast. They didn't even trademark Sprinting Fast, though they are also representing themselves as having a few other trademarks, including advertising having the trademark for "Cat Food Dry," the complimentary product to "Cat Food." The first word is still the same as the second/last word of our company name.

All in all, we are using three identical product NAMES, though the products are different. Cat versus Dog.

My questions. Since they got bigger so much quicker (we couldn't afford all the advisors and such and have had to put a lot of time into hubby's custody case and a house we are trying to get by adverse possession-real that thread under real estate to see why we're trying to get it), can we enforce ownership of our trademark since they are starting to advertise online with it? Can they take it from us? Can we trademark "Cat Food Dry," the other product we have been using in commerce under the name? It's actually misleading for them to use Cat when they sell Dog product. Cat is who we are as a company, Dog is who they are.

Our company is, unfortunately, not large enough to afford an attorney yet. And if we have the money for an attorney we'd be using it for my husband's child custody case. We got a small-time investor who paid the trademark we do have and for our incorporation-"Blue Cat" is a registered Nevada C-Corp.

Any tidbits or points in the right direction or information would be extremely appreciated!

 

[divgradcurl]

First, it's almost impossible to understand what you are doing when everything in your post is made up.

can we enforce ownership of our trademark since they are starting to advertise online with it?

Maybe, maybe not. Just because someone doesn't have a registration doesn't mean they don't have common-law rights to the mark. Generally speaking, a registered mark holder may not enforce their mark against a bonafide pre-existing user of the same mark, but may generally limit the growth of the use of the mark by the preexisting user. So, if someone has a store by a particular name, and you obtain a federally registered mark of that name, you can't make the store change its name, but you may be able to keep the store from opening up another branch with the same name.

Can they take it from us?

If you mean take it as in force you to transfer ownership, no. But they could potentially get your trademark invalidated, but whether or not that is a risk or not would depend on a revbiew of all of the REAL facts in the case.

Can we trademark "Cat Food Dry," the other product we have been using in commerce under the name?

Potentially. See above.

When you say you have a trademark, do you have a a standard character mark or a mark with design elements?

Our company is, unfortunately, not large enough to afford an attorney yet.

Well, from a practical standpoint, that's going to make it difficult to enforce your trademarks...

 

[MinCA]

The only things made up are the names of the companies and products. I wouldn't call them a "bonafide pre-existing user" as our companies came out around the same time, within months of each other. We just found out about them not that long ago and have been using the product name before they launched their site. I should have mentioned that. We can pretty much prove this. We are locate on opposite sides of the country and the chances of us knowing same people are pretty slim, but the people we have confided in about this product can verify we've been using the name for a long time.

We trademarked it as a standard character mark.

 

[divgradcurl]

I wouldn't call them a "bonafide pre-existing user" as our companies came out around the same time, within months of each other.

What I mean by that is that they were using the mark without knowledge of your use of the mark and prior to the registration of your mark being issued. Unless they were "on notice" of your use of the mark, they were a bonafide user -- and if they were using the mark in commerce before your actual registration was issued, they are a preexisting user.

If your registration was issued before they launched their website, then you might have a pretty good case to get them to either stop using the web to sell their product or get them to change the name of their product to something that is less infringing, or less likely to infringe. If, however, they launched the website before your registration issued, then you own pre-existing use will likely be insufficient to keep them from expanding to the web.

But again, without ALL of the facts, it's tough to say for sure what rights you might have, and how best to enforce them -- you really need an attorney to help you out , or you'll need to start learning a lot more about trademark law on your own if you want to do something pro-se.